In Oracle International Corporation v Contractors Network Ltd [2008] D2008-1493 World Intellectual Property Organization (WIPO), the software giant, Oracle International, failed in its bid to have the disputed domain name oraclecontractors.com transferred to it after presenting what the panel described as “not a particularly strong” prima facie case under the Uniform Domain Name Dispute Resolution Policy (UDRP). The decision demonstrates that ownership of a famous trade mark or series of trade marks does not automatically entitle a party to prevent use of the trade marks in a domain name if such use is the only way to adequately describe the respondent’s business.

THE COMPLAINT

Oracle described itself as “the world’s leading supplier of software for information management”. Oracle is the owner of various registered trade marks, including a UK Class 35 registration covering various services related to software and information management.

Oracle argued that the domain name was confusingly similar to the ORACLE mark in which it had rights. Oracle claimed that Contractors Network had no rights or legitimate interests in respect of the domain name and that it had obviously been aware of the ORACLE mark at the time it registered the domain name, as it offered services in relation to Oracle’s range of products. Further, Oracle claimed that Contractors Network was only seeking to capitalise on the ORACLE mark and take unfair advantage of its rights and thus could not contend that its actions had been in connection with a bona fide offering of services. Finally, Oracle argued that the use by Contractors Network of the ORACLE mark in the domain name would confuse potential customers into thinking that Oracle was the source of, or was associated with, or had sponsored, the Contractors Network’s website. According to Oracle, the domain name was therefore registered in bad faith.

THE RESPONSE

Contractors Network started trading in September 2001 and had always used the domain name in connection with its business. Its website was prominently headed “Global Oracle Contractors Network”, and appeared to be focused solely on Oracle products without containing any third party advertising.

THE VERDICT

Dismissing the complaint, the panel held that, whilst incorporating a complainant’s trade mark in a disputed domain name was often an important factor, it did not inevitably lead to a finding of confusing similarity. In this case, Contractors Network demonstrated via its rebuttal evidence that there were numerous users of the expression “Oracle”, both in domain names and in the names of companies and businesses around the United Kingdom and many other jurisdictions around the globe. The combined expression “Oracle Contractors” referred to an identifiable group of people that might be distinct from Oracle itself. Such a group would not necessarily have any contractual or licensing relationship with Oracle. As a result, in the panel’s view Oracle failed to make out its case under paragraph 4(a)(ii)—that a respondent has no rights or legitimate interests in respect of the domain name.

Nor was the panel persuaded that Contractors Network lacked rights or legitimate interest in oraclecontractors.com. The services being offered through the Contractors Network’s website were likely to be used by business or professional customers who either would already appreciate the independent status of the contractors available through Contractors Network’s website, or would spend sufficient time before any commitment was made, learning about the offered services (including the fact that they were not associated with or endorsed by Oracle). Further, there was no suggestion in this case that Contractors Network was in fact “trying to corner the market” for domain names incorporating the expression “oracle” (or the longer expression “Oracle Contractors”). Consequently, in the panel’s view, Contractors Network brought itself within the test for bona fide use.

In conclusion, Oracle’s complaint failed as Contractors Network was using the domain name in a perfectly acceptable fashion in the light of previous WIPO decisions. As such, there was no need for the panel to consider the issue of bad faith registration and use.

COMMENT

It seems from this case that under the UDRP, fame and reputation in a trade mark is absolutely no guarantee of a trade mark owner being able to wrestle the domain name back from a registrant if the use of the trade mark in the domain name is necessary in order to accurately describe the services being legitimately supplied by a registrant.

The decision, however, stands comparison with the Nominet ruling in Research in Motion Ltd (RIM) v Ms Michelle Field [2007] DRS 3960. This clearly suggested that, where a domain name has appropriated the trade mark of another party and is being used more than merely in a descriptive manner, a Nominet expert or Appeal Panel is likely to consider its registration abusive, unless there is a clear indication in the domain name itself that there is no association between respondent and trade mark owner, as well as a clear disclaimer on the site.